JUDGMENT delivered on the 19th day of May, 2010 by Macken, J.
This is an appeal from the judgment of the High Court (Finlay Geoghegan, J.) delivered on the 20th day of April, 2007 and the Order made in consequence thereof, by which judgment the learned High Court judge held that the plaintiff had not made any genuine use of the trademark ESSENSIS No. 211092 registered, inter alia, in Class 29, for any goods in respect of which it was registered, for the statutory period of five years from the date of publication of the registration, and that the respondent was entitled to an Order for its revocation under s.51(1)(a) of the Trade Marks Act, 1996 (“the Act of 1996”).
By a Statement of Claim delivered on the 28th March, 2006 the plaintiff, as proprietor of the trademark registration, pleaded that the defendant had infringed the plaintiff’s registered trademark in the State. It was pleaded that the defendant had used the trademark, or sign, ESSENCE, being a mark or sign allegedly similar to the registered trademark of the plaintiff, in relation to goods identical with, or similar to, those for which the plaintiff is the registered trademark proprietor, in circumstances where there exists a likelihood of confusion on the part of the public, including a likelihood of association of the mark or sign ESSENCE with the registered trademark. The plaintiff claimed this had caused, and was likely to continue to cause, loss, damage, inconvenience and expense. The plaintiff sought, in the usual way, an injunction restraining the defendant from infringing the plaintiff’s trademark, registration number 211092, and consequential orders.
By a Defence and Counterclaim delivered on the 13th April, 2006, while admitting that the plaintiff was the registered proprietor of the trademark in question, the defendant denied that the plaintiff had any legitimate entitlement to maintain the trademark registration because, it was pleaded, within a period of five years following the date of publication of its registration, the registered trademark had not been put to genuine use in the State by or with the consent of the plaintiff in relation to the goods for which it is registered. The defendant acknowledged being aware that the plaintiff markets yogurt products under two trademarks, ACTIVIA and DANONE, and the defendant believed, according to the Counterclaim, that the plaintiff, on the packaging for its ACTIVIA product, had referred to the presence of an active ingredient called “bifidus essensis” which the defendant stated it understood to be a strain of bacterial culture claimed to aid digestion.
While not acknowledging any use of or reference to “bifidus essensis” on any of the products of the plaintiff marketed, sold or distributed in the State, it was alleged by the defendant that such use of the plaintiff’s trademark was not genuine use in relation to any of the goods for which ESSENSIS was registered. The defendant pleaded that the words “bifidus essensis” could not be said to signal the origin of the registered product to the consumer. Further, the word ESSENSIS was not used on its own, but was all times used in conjunction with the word “bifidus” to designate one of the ingredients of goods sold under the trademarks ACTIVIA and DANONE. The defendant pleaded that grounds for revocation of the trademark existed from at least the date of publication of the registration, if not earlier, and invoked the provisions of s.51(1)(a) in pleading that revocation should take effect from the date of registration.
Further, it was pleaded that the application for registration of the trademark had been made by the plaintiff in bad faith, contrary to s.8(4)(b) of the Act of 1996 and for that reason also it should be declared invalid pursuant to s.52(1) of the same Act. This latter plea was based on an allegation that the plaintiff never had any “bona fide” intention of putting the trademark to use in the State in relation to the goods for which it was registered.
In consequence of the matters pleaded in the Counterclaim, the respondent sought two reliefs:
1. Revocation of the registered trademark 211092, pursuant to s.51(1)(a) of the Trade Marks Act, 1996, on the ground that, within the period of five years, following the date of publication of its registration, the trademark ESSENSIS had not been put to genuine use in the State in relation to the goods for which it was registered; and
2. A declaration of invalidity of that registered trademark pursuant to s.52(1) of the Act of 1996 on the basis that the trademark ESSENSIS was registered in bad faith, contrary to s.8(4)(b) of the Act of 1996, the plaintiff never having had any bona fide intention of putting ESSENSIS to use in the State.
In the usual way in which these matters are disposed of, an Order was made in the proceedings directing trial of the above two reliefs sought on the Counterclaim prior to hearing the infringement issue. This is a standard method by which such Counterclaims are disposed of in many jurisdictions, because if the Counterclaim is successful then there is no requirement to embark on any investigation as to alleged infringement of the registered trademark. The matter proceeded with oral evidence, extending over several days, by way of cross-examination on affidavits or on witness statements from both parties.
By her judgment, the learned trial judge made several findings. I propose to deal with these very briefly before considering the grounds of appeal and the submissions made in the appeal itself. In short, she found that the onus being on it to do so, the appellant had failed to establish any genuine use in the State of the trademark ESSENSIS in respect of yogurt; that such use as had been made of the trademark was in relation to a culture within the plaintiff’s yogurt, but for which no registration existed; that it was appropriate to distinguish the use position in this case from that under consideration by the European Court of Justice in case C-40/01 Ansul B.V. v. Ajax Brandbeveiliging B.V.  ECR I-2439; that the defendant was entitled to succeed on its claim to revocation of the registered trademark, but was not entitled to succeed on its claim that it had been registered in bad faith.
From that judgment and the subsequent Order made, by which the learned High Court judge made an Order for revocation of registered trademark 211092, the plaintiff appealed to this Court. No appeal has been lodged to the learned High Court judge’s finding that the respondent failed to establish that the trademark was registered in bad faith.
In proceedings of the type under consideration before the learned High Court judge, the onus of establishing that the registered trademark has been used within the statutory period is on the registered proprietor of the trademark. This is clear from s.99 of the Act of 1996 which reads:
“Where, in any civil proceedings under this Act, an issue arises as to the use made by any person of any registered trade mark, the onus of proving such use shall lie with the proprietor.”
In the judgment of the High Court reference is also made to Council Directive 89/104/EEC (“the Directive”). This is an important piece of legislation because the Act of 1996 was adopted, at least in part, for the specific purposes of transposing the provisions of the Directive into Irish law. That Directive in part harmonised trademark law throughout the European Union. It is common case between the parties that the provisions of s.51(a)(b) have their origin in Article 12(1) of the Directive. This reads as follows, in its relevant portion:
“1. A trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered and there are no proper reasons for non-use …”
Background facts as recorded in the judgment
The trademark ESSENSIS was published for registration purposes on the 12th July, 2000. The learned High Court judge noted that the goods for which ESSENSIS is registered do not include a culture. It was not disputed that the Nice Classification permits registration of a trademark for cultures of micro-organisms, other than for medical and veterinary use, in Class 1. In these proceedings, yogurt is the only relevant goods or products for which ESSENSIS is registered. That product falls into Class 29, and the mark is registered in that class under 211092. According to the judgment there is little dispute about the actual use made by the proprietors of the registered trademark, the appellant in these proceedings, in the statutory five year period. There was substantial dispute, however, as to the proper characterisation of the use in question. According to the judgment the learned High Court, in considering use of the trademark ESSENSIS, stated:
“Between 2000 and September 2004, ESSENSIS has been used by Danone in connection with the marketing, promotion and sale of its yogurt initially sold under the brand names Danone and Bio Activia or Activia.” (emphasis added).
The following was the position concerning use on packaging and advertising, she said:
The learned High Court judge then made the following findings of fact in relation to the use made by the appellant of the trademark ESSENSIS:
“(a) In the period 2000 to 2002 the yogurt on its packaging and advertising bore the name “DANONE” in a representation which is a trademark. It also bore the name “BIO ACTIVIA” in a representation which was also a registered trademark. On the front of its packaging under those words, it were the words “with BIFIDUS ESSENSIS cultures”, after the words ESSENSIS there was the well known designation of an “®” trademark. The packaging in this period also contained, in a less prominent place amongst its explanations under a heading “how can Bio Activia help?”, the following:
“Bio Activia is the only yogurt to contain the natural culture Bifidus ESSENSIS® and has been clinically proven to help your digestive system work optimally, helping your body to purify itself from the inside. The Bifidus ESSENSIS® culture also makes Bio Active milder, creamier and more delicious”.
(b) In 2002 “Bio” was dropped as part of the brand name and the yogurt was then marketed and packaged under the same representation of “DANONE” and the name “ACTIVIA” under which on the packaging was now simply written “with BIFIDUS ESSENSIS®”. In this period the explanation on the packaging included:
“WHAT is DANONE ACTIVIA?
DANONE ACTIVIA is a range of delicious tasting live yogurts which contain a UNIQUE natural culture, BIFIDUS ESSENSIS®, specially selected by DANONE researchers for its proven benefits to your health.
WHY is DANONE ACTIVIA ACTIVELY GOOD FOR you?
BIFIDUS ESSENSIS®, a natural culture, UNIQUE to DANONE ACTIVIA has been proven to help our digestion work better, as it supplements and supports the essential culture in our intestinal flora. A healthy digestion is essential to a healthy life. The BIFIDUS ESSENSIS® culture also makes DANONE ACTIVIA milder, creamier & much more delicious.”
Certain of the advertising or promotional material in this period stated that “Only DANONE ACTIVIA contains BIFIDUS ESSENSIS” throughout this period the yogurt itself was referred to either as “DANONE ACTIVIA” or “ACTIVIA”.”
The learned High Court judge considered that the legal issue to be resolved in the proceedings was whether the use in fact made by the registered proprietor of the trademark ESSENSIS is genuine use of the trademark within the meaning of s.51(1) of the Act of 1996 in relation to yogurt, being “the goods … for which it is registered”.
“1. The trademark was used by Danone by putting same on packaging, marketing and advertising materials for its yogurt sold successively under the brand names “Bio Activia” or “Activia” but always in conjunction with the word “Bifidus” and always as the name of an ingredient of the yogurt, namely a pro-biotic culture.
2. The trademark ESSENSIS either on its own or in conjunction with Bifidus was never used to designate the yogurt. At all times it was used to designate an ingredient of the yogurt.
3. The pro-biotic culture called “Bifidus ESSENSIS” was unique to Danone.
4. The existence of the unique culture called Bifidus ESSENSIS and its claimed health benefits was part of the marketing and promotional strategy of Danone to distinguish the Bio Activia or Activia yogurt from its competitors.” (emphasis added)
According to the judgment, both parties agreed that the provisions of the Act must be given a construction which is compatible with the provisions of the Directive. The learned High Court judge analysed the law relating to the requirements for genuine use pursuant to the Directive, as enunciated by the European Court of Justice, commencing with the decision in case No. C-517/99 Merz v. Krell GmbH & Co.  E.C.R.I-6959, and then in Ansul B.V., supra. and the cases which followed on, in applying the same principles of law as established in Ansul. I will be referring to this case law in the course of my conclusions but for the purposes of this part of the judgment it is not necessary to consider these in detail. The learned High Court judge also recognised that the appellant had established “real commercial use” of ESSENSIS as part of what has been described as third level branding of its yogurt, which was explained as being branding a product by reference to a unique branded ingredient. She considered in detail the arguments made on behalf of the respondent, in particular its contention that use of the trademark had not been established in relation to yogurt, the only relevant product. This argument was to the effect that such use as had occurred was not use of ESSENSIS as a trademark in relation to those goods. On her analysis of the above referred to case law of the European Court of Justice the learned High Court judge considered that that Court requires use of the mark “in accordance with its essential function”, that is to say, the use must be use of the mark as a trademark in relation to the goods of its registration.
Having analysed the evidence concerning use, having made certain findings of fact, and having considered the relevant case law, the learned trial judge concluded that she was not satisfied that the use made of the trademark ESSENSIS was use as a trademark in relation to yogurt, notwithstanding the placing of the trademark on the packaging of, and in advertising materials for, the appellant’s yogurt products. She found that its use has been “unequivocally confined to referring to an identified ingredient of the yogurt as distinct from the yogurt itself”, and concluded that such use was not use in accordance with the essential function of a trademark in guaranteeing the identity of the origin of yogurt, as required by the principles enunciated in the above case law. The learned High Court judge considered that in order for use to be genuine use as a trademark in relation to yogurt “it appears to me that it would have to be the use of the ESSENSIS mark on the yogurt as distinct from the inclusion of an identified ingredient to which it refers which guarantees the identity of the origin of the yogurt in order that it be considered to be genuine use as a trademark in relation to yogurt”.
She also found that genuine use as a trademark for a specified product requires that the mark be applied in such a way that it is, at minimum, capable of being understood as referring to that product. Unless it is so applied it cannot be used for the purposes of identifying the origin of such product. A trademark can only identify the origin of goods to which it may be understood as referring. She held that the appellant, by using ESSENSIS in such a way that it can only be understood as referring to an identified ingredient of the yogurt as distinct from the yogurt itself, precluded the use made being considered as trademark use in relation to yogurt. The learned High Court judge distinguished the use made by Ansul of the trademark MINIMAX on spare parts, considered by the European Court of Justice to be genuine use in relation to fire extinguishers, from the use made by the registered proprietor in the present case.
Accordingly, she found that the appellant, as plaintiff, had not proved genuine use of the trademark ESSENSIS in relation to yogurt, within five years of its publication date and that the respondent was in consequence entitled, pursuant to s.51(1)(a) of the Act of 1996, to an Order for its revocation.
On the second ground arising in the Counterclaim, that is to say that the appellant had registered the trademark mala fides, she found that this claim was not established by the respondent, and as mentioned above, no appeal was lodged by the respondent to that finding. In the circumstances, it is not necessary for me to consider that claim any further.
By a Notice of Appeal dated the 15th day of May, 2007, the appellant appealed from the judgment and Order of the learned High Court judge in substance on the following grounds, namely, that the learned trial judge erred in law and in fact:
1. In finding that the appellant’s use of ESSENSIS was not genuine use of Irish Trade Mark Number 211092 in relation to yogurt within the meaning of section 51(1) of the Trade Marks Act 1996.
2. In failing to have any or any adequate regard to evidence that the appellant’s use of ESSENSIS was part of a “third level branding” of its yogurt.
3. In failing to find that the use of ESSENSIS in respect of a unique branded ingredient contained in the appellant’s yogurt was genuine use of Irish Trade Mark Number 211092 in relation to yogurt within the meaning of section 51(1) of the Trade Marks Act 1996.
4. In failing to find that ESSENSIS was used for the purpose of guaranteeing the identity of the origin of the appellant’s yogurt.
5. In failing to find that ESSENSIS was used as a trade mark in relation to the appellant’s yogurt.
6. In finding that the appellant had used ESSENSIS in such a way that it could only be understood as referring to an identified ingredient of the yogurt as distinct from the yogurt itself.
7. In finding that in order to be genuine use as a trade mark in relation to yogurt, there would have to be the use of the ESSENSIS mark on the yogurt, as distinct from the inclusion of an identified ingredient to which ESSENSIS refers.
8. In finding that genuine use as a trade mark for a specified product requires that the mark be applied in such a way that it is, at minimum, capable of being understood as referring to that product.
9. In finding that the trade mark can only identify the origin of goods to which it may be understood as referring, and in particular in not making any allowance for the capacity of a branded ingredient to identify the origin of the goods within which it is comprised.
10. In regarding Class 1 of the Nice Classification as having any bearing on the issue as to whether the appellant had made genuine use of Irish Trade Mark Number 211092 within the meaning of section 51(1) of the Trade Marks Act 1996.
11. In her interpretation and/or application of decisions of the European Court of Justice on the interpretation of Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21st December, 1988.
12. In ordering the revocation of Irish Trade Mark Number 211092 ESSENSIS pursuant to section 51(1) of the Trade Marks Act 1996.
13. In failing to limit the extent of the revocation of Irish Trade Mark Number 211092 ESSENSIS pursuant to section 51(1) of the Trade Marks Act 1996.
The Argument of the Parties on the Appeal
Essentially, it is argued first, by Mr. Gordon, senior counsel on behalf of the appellant, that certain of the findings of fact made by the learned High Court judge are contrary to other findings of fact, all of which have been set out above. It is contended secondly that the learned trial judge’s factual finding that the trademark ESSENSIS was never used to designate the appellant’s yogurt product but was at all times used to designate only an ingredient in the yogurt, was unsupported by the evidence, was inconsistent with the learned trial judge’s other factual findings, and was incorrect in fact and in law. Thirdly, it is submitted that in arriving at her findings, the learned trial judge applied an unduly narrow interpretation of the words “in relation to” in s.51(1) of the Trade Marks Act, 1996, which is inconsistent with the proper interpretation of the corresponding phrase “in connection with” found in Article 12(1) of the Directive and with the correct interpretation of the concept of genuine use in accordance with the essential function of a trademark, under the Directive. In consequence, he submits that, although the appellant’s Bifidus ESSENSIS culture has been used exclusively in the appellant’s yogurt products and the ESSENSIS mark has been used extensively as a tertiary sub-brand, whether on the yogurt products themselves or in advertising material relating to the products, and specifically in order to distinguish the appellant’s yogurt products from those of its competitors, the learned High Court judge had wrongly found that such use did not qualify as genuine trademark use in relation to the appellant’s yogurt. Counsel submits that this result cannot be correct in view of the concept of genuine use developed by the European Court of Justice in its case law, and is not either consistent with various decisions of other National Member State courts or of trademark officers who have interpreted national law provisions equivalent to Article 12(1) of the Directive in relation to tertiary sub-brands.
Counsel further contends that the learned High Court judge, having expressly found, as a matter of fact, that the appellant used the Bifidus ESSENSIS trademark on a unique culture on the packaging and as part of the appellant’s marketing and promotion strategy to distinguish its yogurt products from those of its competitors, the learned trial judge had, nevertheless, in conflict with that finding, found that the ESSENSIS mark had been used only in relation to an ingredient of the appellant’s yogurt products and not in relation to the yogurt products themselves. She made this finding, although the appellant does not sell or trade in the culture separately or use the culture as a constituent ingredient of any product other than its yogurt products. It is submitted on behalf of the appellant that, in reaching this conclusion, the learned trial judge failed to consider the capacity of a branded ingredient to identify the origin of the goods within which it is comprised.
Mr. Gordon points to evidence adduced during the course of the High Court hearing in relation to the establishment of such identifier of origin, and to the last of the extracts cited above as findings of fact, in which the learned trial judge expressly found that the appellant’s bifidus ESSENSIS culture was used by the appellant in order to distinguish its yogurt products from the products of its competitors. It is, therefore, submitted, both in the appellant’s written submissions and in oral argument to this Court, and based on the learned High Court judge’s factual findings and the evidence before her, that it was both open to the learned High Court judge to find, and the learned High Court judge ought to have found, that the trademark ESSENSIS, although referring to a unique and exclusive ingredient of the appellant’s yogurt products, functioned in the minds of consumers as an identifier of origin of its yogurt products, and constituted genuine trademark use in relation to the same..
Counsel for the appellant also referred this Court to the law relating to the “essential function” doctrine, as developed by the European Court of Justice, commencing with its decision in Case C-517/99 Merz v. Krell, supra., and as being represented by the phrase “if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. The European Court of Justice stated in the case of Ansul, supra., it is argued, and as subsequently confirmed in C-206/01 Arsenal Football Club Plc. v. Matthew Reed  E.C.R. I-10273 that the essential function of a trademark is to guarantee the identity of origin of the marketed goods or services to the consumer or end user by enabling him, without possibility of confusion, to distinguish those goods or services from others which have another origin. It is, therefore, contended that, according to the relevant case law of the Court of Justice, a trademark will function in accordance with its “essential function” where it functions as an identifier of origin for the goods for which it is registered, in order to create or preserve an outlet for those goods.
In support of his argument that the learned High Court judge had adopted an unnecessarily or unduly narrow interpretation of the requirements for genuine use under s.51(1) of the Trade Marks Act, 1996 and of the corresponding Article of the Directive. Counsel also draws the Court’s attention to certain other relevant cases decided in other jurisdictions.
Counsel for the appellant submits, however, that, if the result contended for is not clearly found in the decisions of the European Court of Justice, in particular the decision in the Ansul, supra., and the cases which followed thereafter, and recognising that there is no extant decision of that Court which specifically considers whether the use of a registered trademark - which functions as a secondary, or even a tertiary trademark, and designates a constituent ingredient or element of a product that is exclusive to the trademark owner, and not otherwise used in the course of trade – can, in appropriate circumstances, constitute genuine use in relation to the products in accordance with the essential function of the trademark under the terms of the Directive, then the answer to the question has substantial legal and commercial ramifications and it may be appropriate for referral to the European Court of Justice for its opinion.
On the other hand, senior counsel on behalf of the respondent, Mr. McDonald, takes a diametrically opposite view to that propounded by Mr. Gordon on behalf of the appellant.
First, he argues that findings of fact of the learned High Court judge take the benefit of the decision of this Court in Hay v. O’Grady  1 I.R. 210 and he relies on the following finding of the learned High Court judge in that regard:
“On the facts found herein I am not satisfied that the use made of the trademark ESSENSIS is use as a trademark in relation to yogurt. The use made includes placing the trademark on the packaging of and in advertising materials for Danone's yogurt. However on the facts found herein the manner in which it has been so placed is such that its use has been unequivocally confined to referring to an identified ingredient of the yogurt as distinct from the yogurt itself. On the package, whilst the trademarks " Danone" and "Bio Activia" and "Activia" are placed on the packaging and used in advertising material in an unqualified way such that they clearly apply to the yogurt, ESSENSIS is always used as a name for the culture and either expressly stated to be an identified ingredient or following a prefix such as "with", indicating that this is an ingredient of the yogurt.”
Counsel argues that, while there is no difficulty in accepting or recognising the concept of a tertiary brand, it is not possible for the appellant to rely on the alleged use of the trademark ESSENSIS as a so-called tertiary brand in respect of yogurt. On the contrary, it is submitted that the appellant is seeking to treat ESSENSIS in the same way as genuine tertiary trademarks have been treated in the case law relevant to such marks. There is, he argues, a clear distinction between the use to which the trademark ESSENSIS has been put in respect of a culture ingredient in yogurt and the use of tertiary trademarks in the case law, particularly in the United Kingdom. It is submitted, however, on the part of the respondent, that an argument based on a tertiary brand or a sub-brand is of no assistance to the appellant because there has been no use in the present case in relation to the product for which the trademark is registered, contrary to the position in all other such cases. As did Mr. Gordon, Mr. McDonald also cites several cases in both the written submissions in the course of oral submissions.
Counsel for the respondent also makes specific reference also to the scheme of the Act of 1996 and, in particular, to the phrase found in s.51, which includes the following:
“the trade mark has not been put to genuine use in the State, by or with the consent of the proprietor, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use.” (emphasis added)
He argues, therefore, that if the appellant is to satisfy the onus of establishing use as a trademark, it must prove genuine use “in relation to” the goods for which it is registered, and use of the trademark in relation to other goods is entirely irrelevant. He finds support for this also, he argues, in s.37(2) of the Act of 1996, which requires that the applicant must identify and state that the trademark is being used in relation to the goods or services specified in the application, or that the applicant has a bona fide intention of doing so. Further, he points to the fact that when the Controller of Trademarks grants registration of a trademark, it will be registered only in respect of the particular goods or services for which registration has been sought. He submits that this requirement to specify the goods or services in respect of which registration is sought is emphasised also in the Rules made pursuant to the Act of 1996. For the purposes of this judgment it is not necessary to cite these Rules. The conclusion, however, which Mr. McDonald asks the Court to accept, is that the scheme of the 1996 Act is such that registration is granted only in respect of specific goods or services, being the defining criterion by reference to which issues such as infringement, or non-use, are assessed. He contends that the appellant opted not to register the trademark ESSENSIS in respect of cultures, and that the learned High Court judge had correctly found that the appellant had never used the trademark ESSENSIS in relation to anything other than cultures. Accordingly, it is submitted that the appellant has no basis in law to resist revocation under s.51 of the Act. In such circumstances, it is argued on behalf of the respondent, that there is no requirement or necessity for this Court to consider making a reference to the European Court of Justice, because the basis for a reference does not arise.
There are two or three preliminary matters which should to be mentioned before I deal with the nub of the arguments on appeal. Firstly, an argument was made in the course of the oral hearing before this Court, that the words used in the English language version of the Directive are not wholly appropriate or fully accurate, having regard to the manner in which the same Directive is drafted or translated in several other languages. This arises in the following circumstances.
Section 51(1) of the Act of 1996 reads as follows:
The phrase “in relation to” is slightly different from the wording appearing in the English language version of the Directive. Article 12(1) of the Directive provides as follows:
“(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that, within the period of five years following the date of publication of the registration, the trade mark has not been put to genuine use in the State, by or with the consent of the proprietor, in relation to the goods or services for which it is registered …” (emphasis added)
“A trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods, or services in respect of which it is registered and there are no proper reasons for non-use”. (emphasis added)
Both parties are ad idem that, as between the words used in the Act of 1996 and in Article 12(1) of the Directive, there is no distinction of any substance. I agree.
However, Mr. McDonald, on behalf of the respondent, argues that when the English language version of the Directive is considered alongside its corresponding versions in French, German, Spanish, Dutch and Italian, the English language version is different and is wrongly translated, so as to permit a broader range of use than is properly provided for in the great majority of other languages into which the Directive has been translated. In all of the above languages, what appears in the various versions is a liability to revocation within the statutory period if the trademark has not been put to use in the Member State “for the goods or services” in respect of which the trademark has been registered. Counsel for the respondent contends that on a correct interpretation of the phrase “for the goods”, this requires a much closer and tighter relationship with the registered products, such that the mark must be used on the registered products themselves. He submits, therefore, that since the English language version of the Directive, as transposed into Irish law by the Act of 1996, differs markedly from the other versions, it must be interpreted in a manner which is consistent and compatible with the vast majority of the other language versions of the Directive, which impose narrower requirements as to use.
There are two matters it seems to me, which arise from this argument. The first is linguistic and concerns whether or not the phrase “in connection with the goods” in the Directive (or in the case of the Irish legislation “in relation to the goods”) can properly be said to be in any way materially, or even reasonably, different from the phrase “for the goods or services” found in other language versions of the Directive. Although certain dictionary meanings were considered in the course of the exchanges during the hearing of this appeal, I am not at all satisfied that there is any evidence before this Court from which it could be concluded that there is any real distinction, linguistically speaking, between the various phrases used in the different versions of the same Directive, and I do not find either that this was a serious issue in the High Court or one considered by the learned High Court judge in her judgment. Indeed, I am satisfied that the more vague phrase “for the goods or services”, which is in no way limited linguistically, does not, on any reasonable interpretation, necessarily mean “on the products”, if by that phrase is meant physically on the products. Nor is it narrower than either the phrase used in the English language version of the Directive, or in the Act of 1996, as contended for by the respondent.
The second matter it throws up, and which may explain the difference between the language used in many of the other language versions presented to this Court, and the English translation of the Directive, is one which may arise from the origin of the Directive itself. Prior to the passing of the Directive which, as mentioned above, in part harmonises certain key elements of trademark law in all Member States, there was no investigation of the registrability of trademarks prior to their registration in most Member States of the European Union, with the exception of the United Kingdom, Ireland and a very small number of then other Member States. The Directive itself has its genesis, with of course some considerable modification, in the common law system of prior examination of trademarks, where the phrase “in relation to the goods or services” has for many years had a particular resonance and was used for registration, for opposition and for revocation applications. The English, as well as Irish, textbooks and the English and Irish case law are replete with references to the phrase “on or in relation to the goods or services”, as the requirement for use. It is probably not surprising that in the English language version of the Directive, that phrase, developed over many years of jurisprudence, was adopted for the purposes of translating the requirement for use, rather than what I would consider to be the less precise phrase “for the goods or services”.
In either event, it seems to me that no real distinction in law can be drawn between the requirements for use as expressed by the phrase “in connection with the goods” or indeed “in relation to the goods” on the one hand, and the phrase “for the goods” on the other hand, and in this judgment I deal with the phrase occurring in the English language version of Article 12(1), as transposed into Irish law by the Act of 1996, as if all three phrases were identical.
A second issue arose in consequence of exchanges between the bench and counsel for the parties, and which concerns the relevance, if any, of s.8 of the Act of 1996, which transposes into Irish law the provisions of Article 3 of the Directive relating to grounds for refusing registration of a trademark. It was not entirely clear to me in the course of the hearing, the precise scope or ambit of the allegation made by the respondent in relation to the trademark ESSENSIS in the context of its use in relation to an ingredient in the yogurt products of the appellant. This appeared to fall into two possible areas, namely, the narrow, indeed very narrow, argument concerning only the issue of the precise use to which the trademark had been put by the appellant, as part of its packaging and in the course of the marketing of its yogurt, or whether it also encompassed an issue as to whether or not the mark had any capacity to function as a trademark in respect of the goods for which it was registered. For the purposes of my judgment I confine those goods to yogurt. It was emphasised by Mr. McDonald, for the respondent, that s.8 of the Act of 1996 had not been an issue in the High Court at all, and that in the view of the respondent, it has no relevance whatsoever in this appeal. To clarify the position concerning the precise ambit of the claim, however, it seems to me, that it is nevertheless helpful to make some reference to s.8 of the Act of 1996.
A “trademark” is defined for the purposes of trademark protection, in s.6 of the Act of 1996, corresponding to Article 3 of the Directive. It will be seen that a distinction is drawn between a sign on the one hand, and a trademark on the other hand, the latter of which is a sign which is “capable of distinguishing goods or services” and which qualifies for registration within the provisions of the Act and the Directive, provided that registration is not prohibited by any of the grounds of prohibition appearing in s.8 of the Act of 1996. Only s.8(3)(c) of the Act, corresponding to Article 3(1)(c) of the Directive, is relevant in the present circumstances, and it reads:
The trademark ESSENSIS, when originally registered, was registered in respect of yogurt, and on its face did not fall foul of any of the prohibitions found in s.8 of the Act of 1996. This includes the fact that, in law, it did not offend sub-section (c) of the above provision, it not being a mark which itself describes any characteristics or qualities in the goods sought to be registered. In other words, it is not a mark which of itself is in any way descriptive of characteristics or qualities in the goods. However, during the course of the High Court proceedings and during the course of the appeal, ESSENSIS is acknowledged as being used “to describe an ingredient” in the products in question, namely yogurt, which gives the yogurt its characteristic, or one of them. It seems to me important, however, to note the distinction between such a “description” on the one hand, which in the case of the culture, is general in nature, and a trademark which is “descriptive” of a characteristic or quality in the goods themselves, which, if it were so, would be properly refused registration pursuant to s.8 of the Act of 1996.
“The following shall not be registered as trademarks:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods of services”. (emphasis added)
But a recognised corollary of a trademark which is not precluded from registration pursuant to the provisions of s.8 of the Act of 1996 on the grounds of descriptiveness is that such trademarks are, in trademark parlance “distinctive” of the goods in question. Use of the word “distinctive” in such trademark parlance refers not only to the pre-Directive legislation, both in the United Kingdom and in Ireland, but also to the post-Directive interpretation of the legislation by the European Court of Justice, which equates that distinctiveness with the ability or capacity of the trademark to carry out its “essential function”, that is to say, to distinguish the goods of one enterprise from those of others, as is frequently found in cases, including the large number of cases on appeal to the General Court from decisions of the Board of Appeal of the Office for Harmonisation in the Internal Market pursuant to Council Regulation [EC] No. 40/94, as amended by Regulation [EC] No. 207/2009.
While, therefore, s.8(1) of the Act of 1996 did not form part of the case in the High Court, and of itself does not either form part of the case on appeal before this Court, it is nevertheless the case that when the trademark ESSENSIS was registered, it had, at least, the capacity to carry out the essential function of a trademark in respect of yogurt. It was for this reason that I sought to enquire of the respondent the precise ambit of the claim in the proceedings. I conclude from the exchanges that the only issue which requires to be resolved on appeal is whether or not the learned High Court judge was correct in finding that the precise use made by the appellant of the trademark in the marketplace by its placement on packaging and in advertising on or in relation to the goods in respect of which it is registered, did not constitute genuine trademark use, in the sense that it did not carry out its “essential function” of designating the origin of the yogurt products, by virtue of the manner in which it has been so used.
Finally, as concerns the possibility of a reference to the European Court of Justice, in light of the appellant’s suggestion in respect of the possibility of the same, in the general application of this Rule of Procedure of the European Court of Justice that Court takes the view that if the answer to the question referred can be clearly found in the jurisprudence of the Court, a response will be delivered by means of a reasoned Order, thereby enabling the court to dispose of the matter on a preliminary basis, as was considered appropriate in the case I mention in my conclusions, La Mer Technology, supra.. Moreover, the Court of Justice has stated, with some considerable regularity that if a response to a question, which might be the subject of a reference, can be found or is clearly to be inferred from its case law, that is to say, is acte clair, this Court may find the necessary responses accordingly..
It seems to me that the starting point in relation to the narrow but technical issue which is raised in this appeal must be the jurisprudence of the European Court of Justice, in particular the jurisprudence commencing with the case C-40/01, Ansul, supra., which was referred to by the learned High Court judge in some considerable detail in her judgment. She found, having analysed the decision of the court, that although according to that decision use made of a mark MINIMAX by placing the same on spare parts, accessories or after sales service documents may be considered as use of the mark in relation to the goods for which it was registered, that is, fire extinguishers, which had not been used within the statutory period required by the provisions of the Directive, the use of the mark by the appellant in the present case, that is to say use of the trademark ESSENSIS on an ingredient in yogurt, is distinguishable from the use made by Ansul, saying:
“In that case the goods for which the mark was registered, the fire extinguishers, had previously been sold under the Minimax trademark. The use under consideration included placing the mark on spare parts found to be integral to the fire extinguishers, and making use of it for certain after sales services including sale of accessories and maintenance. There is no suggestion that the mark was used in such a way that it was precluded from being understood as referring to the fire extinguishers previously sold (under the same mark) or as referring to any other identified good or product. It was used on a range of goods (spare parts and accessories) and services all considered to relate to the fire extinguishers.”
This statement raises four features which the learned High Court judge considered supported her view. Firstly, the fact that the goods had previously been sold; secondly, the use was on parts for those goods; thirdly, there was no use on any other identified product; such as precluded it being understood as referring to fire extinguishers previously sold, and finally, the use was on goods or services which “relate to” fire extinguishers.
The second feature of note in the learned judge’s conclusions in relation to the use of the trademark ESSENSIS, are the findings of fact in the judgment, among which is a finding which is inconsistent with the learned trial judge’s other factual findings in the judgment, as contended for, correctly in my view, by the appellant, and as set out earlier.
Even if it could be said that the findings of fact, while clearly suggesting such inconsistency, ought to be read as not evidencing any material inconsistency, I am nevertheless not satisfied that, on a correct application of the law, and in particular on a correct application of the Ansul case law and the principles established by the European Court of Justice in that case, the type of use made by the appellant of the trademark ESSENSIS does not fully comply with that case law. Nor do I consider that, on their proper application, the principles governing the use made of the trademark MINIMAX in Ansul, can be justifiably distinguished from the use made by the appellants of the trademark ESSENIS in this case.
On the evidence adduced, and on the judgment, the product to which the trademark ESSENSIS is physically applied is the yogurt product of the appellant sold under the primary mark DANONE, a house mark of the appellant, and/or ACTIVIA, a primary product trademark of the appellant. The mark is never used in respect of a culture product sold independently of the appellant’s yogurt products. It is not entirely surprising that, in the absence of any intention to trade in cultures, there is no trademark registration in respect of cultures in Class 1 of the International Classification of Goods and Services adopted pursuant to the Nice Convention. The trademark is used extensively, according to the findings of fact of the learned High Court judge, in advertising and promotional materials, all in respect of the appellant’s yogurt products and, as she found, “to distinguish” those goods from those of other manufacturers. From a trademark point of view, I have found that since the trademark does not infringe the provisions of s.8(1)(c) of the Act of 1996, or of the Directive, it had the capacity upon registration to fulfil its essential function.
The particular characteristic of the appellant’s yogurt, generated by a particular ingredient that is in it, is a culture known as “bifidus”. This is the ingredient in the yogurt product, of which ESSENSIS is the trademark. I do not consider there is anything in law which prevents an ingredient from being part and parcel of the marketing or promotion of the product of which it is an essential component, to distinguish it from the goods of others, or that when the mark is used in relation to, what might be described as, the whole product, namely yogurt, a trademark used to designate a particular characteristic, provided of course it does not otherwise infringe s.8(1) of the Act of 1996, cannot carry out its essential function as a trademark in respect of the goods for which it is registered, that is to say, yogurt.
Further, from a trademark law point of view I can find little or no distinction, or at the very least if there is a distinction, it is one without any real difference, between use of a trademark in respect of spare parts of a product, such as in the case of the trademark MINIMAX, the subject of the Ansul case, and use in respect of a specific integral ingredient in a product, such as is designated by the trademark ESSENSIS in the present case. I refer again to the above four factors, relied upon by the learned High Court judge to distinguish the use in the present case from the use in Ansul. The use in Ansul was, according to her, use on goods or services which “relate to fire extinguishers”. So too, on any reasonable application, does the use of ESSENSIS “relate to” the appellant’s yogurt. Secondly, the use in Ansul included placing the mark on spare parts for the product. In the present appeal the use is on an integral constituent of the yogurt, which does not appear to me to be any different, in trademark terms, to use on spare parts. The next factor is that the mark was used in Ansul on parts for a product not used within the statutory period but previously sold. If anything, it seems to me that the use which is made of the trademark ESSENSIS is more integral and more closely connected with the product in respect of which it is registered, than subsequent use on spare parts, which such use, in the Ansul case, was considered sufficient to avoid revocation of the trademark for the registered products, fire extinguishers, for which there was no use within the relevant period. These three factors are not, therefore, in law, sufficient grounds for distinguishing the trademark use in Ansul from the use of ESSENSIS in the present proceedings.
The last factor invoked by the learned High Court judge to distinguish the use in Ansul is the fact that there was no suggestion the mark was used in such a way “that it was precluded from being understood as referring to fire extinguishers previously sold”. But it does not seem to me that this can be a distinguishing feature of the Ansul decision so as to disapply it in the present case. Insofar as that case is concerned, certain relevant facts require to be borne in mind. The first is that the trademark MINIMAX had not been used at all in the statutory period in respect of the specific goods for which it was registered, namely fire extinguishers. It can be readily inferred from the judgment also that the trademark MINIMAX, although capable of being registered in respect of spare parts or accessories for fire extinguishers, did not have the benefit of a registration for these goods. Secondly, although the trademark MINIMAX could also have been registered in one of the service classes in respect of the servicing of fire extinguishers, there was no such registration for services either. This factual position is closely analogous to the position in the present case in the sense that, as was found by the learned High Court judge, and as has been acknowledged by the appellant, the trademark ESSENSIS, although capable of being registered in respect of cultures in Class 1, was not so registered. The only products on which the Ansul mark was used were spare parts, for which no registration existed either. I do not find any basis in law for the learned trial judge’s finding that the use in Ansul on spare parts was “not precluded from being understood as referring to fire extinguishers”, when in fact the only use referred to was in respect only of spare parts, being sold separately and long subsequent to any sale of the registered products in respect of which the spare parts were to be used. I conclude that no distinction in law exists between the position in the present case and the use position, in trademark terms, in the Ansul case, although of course in line with the usual respect which the European Court of Justice affords to the appropriate national decision maker, the court itself did not find that the use actually made of the MINIMAX trademark constituted in law genuine use of the trademark, that being a matter for the national court.
Further, it is the case that the basic principles of law found in the Ansul case are not those directed specifically to use on spare parts or accessories, or services used in relation to the unused goods of the trademark registration, but rather a set of principles applicable in all cases. It will be recalled from the High Court judgment that the principles established in the Ansul case, which have been followed in several subsequent cases, are found in a relatively short number of paragraphs in the judgment. I am satisfied that the use of the trademark actually made in the present case is sufficient to meet the general criteria set out by the Court of Justice in Ansul. The court stated:
Apart from the application of those principles in the subsequent reasoned Order of the European Court of Justice in La Mer Technologie Inc., supra., the matter was again revisited, as was pointed out by the learned High Court judge, on an appeal from the Court of First Instance in Case C-416/04, The Sunrider Corporation v. Office for Harmonisation in the Internal Market  E.C.R. I-4237, in which the court again summarised its case law. Of particular relevance, however, to the present application is the following statement of the court at para. 71, which reads:
“37. It follows that genuine use of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. The protection the mark confers and the consequences of registering it in terms of enforceability vis-a-vis third parties cannot continue to operate if the mark loses its commercial raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings. Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns. Such use may be either by the trade mark proprietor or, as envisaged in Article 10(3) of the Directive, by a third party with authority to use the mark.
42. The same may be true where the trade mark proprietor makes actual use of the mark, under the same conditions, for goods and services which, though not integral to the make-up or structure of the goods previously sold, are directly related to those goods and intended to meet the needs of customers or those goods. That may apply to after-sales services, such as the sale of accessories or related parts, or supply of maintenance and repair services.
43. In the light of the foregoing considerations the reply to the first question must be that Article 12(1) of the directive must be interpreted as meaning that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; …The fact that a mark is not used for goods newly available on the market but for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to need the needs of customers of those goods.” (emphasis added)
“The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account (see, to that effect, order in La Mer Technology, paragraph 22).” (emphasis added)
One of the factors to be taken into account in the present case, in assessing whether or not the trademark when used on packaging for yogurt and extensively in its marketing and advertising, inter alia, for the recognised purpose, as found by the learned High Court judge, of distinguishing the appellant’s yogurt from others, is capable of, or does in fact, carry out its essential function, may be the characteristics of the goods in question. Certainly in the present case ESSENSIS is closely related to the product itself because it is used on the culture which gives it its unique, or one of its unique, characteristics. It is, in fact, “integral to the make up or structure of the goods” as mentioned at paragraph 42 of Ansul, supra., where the court granted protection to spare parts, even when “not integral” to the unused goods.
On the other hand, I do not consider that either the decision of the Hearing Officer in the trademark application HIGH AND MIGHTY (7th March, 2006) High & Mighty Limited v. Arnotts Limited, or the decision of the Hearing Officer in respect of the application for revocation of the trademark LELLIKELLY (21st March, 2005 Travel Hurry Projects Limited v. Stefcom S.P.A., are apt for application in the present case. In the latter case the statement relied upon is a statement of law, with which there is no difficulty, and in the former case there was a decision, on the facts, where the trademark HIGH AND MIGHTY had never been used on any goods at all but had merely been displayed in physical proximity to clothing items, as a description of a sales area in a store.
I am satisfied that on a correct application of both the general principles of law found in the Ansul case and in later decisions of the European Court of Justice, and on the specific findings of the Court in relation to the type of use occurring in Ansul, these principles and findings clearly respond to and fully answer the legal issues arising in this appeal. On the correct application of both the general principles and the specific principles applicable to the factual evidence of trademark use in the Ansul case, these are such as to oblige me to conclude that the learned High Court judge applied an unduly restrictive interpretation of those principles, and that in doing so, she erred in law. Having regard to my findings on the correct application of the principles established in the case law of the European Court of Justice, upon which the learned High Court judge based her reasoning, I do not consider it necessary to invoke the case law of other Member States in relation to the correct application of the law found in the Directive and as transposed into Irish law by the Act of 1996. Moreover, I consider that the case law of the European Court of Justice, cited above, providing, as it does, a sufficiently clear basis upon which to determine the sole issue for resolution in this appeal, there is no requirement to refer any question to that Court for its opinion.
For the above reasons, I am satisfied that the appellant established before the High Court sufficient facts as to use of the trademark ESSENSIS upon which the learned High Court judge ought to have concluded that the use of that mark was genuine trademark use in respect of the products for which it is registered, namely yogurt, and that by reason of an unduly narrow application of the principles relating to trademark use, as established by the European Court of Justice, the learned High Court judge misdirected herself in law on the application of the appropriate principles to the evidence established in the course of the hearing.
I would, therefore, set aside the judgment and Order of the High Court and substitute an Order refusing the respondent’s application made pursuant to s.51(1)(a) of the Act of 1996 for revocation of Irish Registered Trademark No. 211092 ESSENSIS in Class 29.